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Tuesday, 11 October 2011

Astronomers, philosophers and fans of Queen the world over will by now have learned that the European Union's General Court has delivered its decision last week in the Battle of the Galileos, Case T‑488/08, Galileo International Technology, LLC v Office for Harmonisation in the Internal Market, Galileo Sistemas y Servicios, SL. The General Court agreed with OHIM's Fourth Board of Appeal that there was no likelihood of confusion between Galileo's "Galileo" figurative mark and Galileo's earlier GALILEO word and "Galileo" figurative marks. No, that's no good. Let's start again.

GSS Galileo sistemas y servicios ("GSS") applied to register as a Community trade mark a figurative sign (above, right), which contained the words "GSS Galileo sistemas y servicios". Registration was sought for 'nautical, surveying and life-saving apparatus and instruments; apparatus and instruments for signalling, in particular antennae and radio beacons’ (Class 9) and "telecommunications’ (Class 38).

Galileo International Technology (GIT) opposed this application, maintaining that, on account of the similarity of its own earlier marks to that of GSS and the identity or similarity of goods and services for which they were registered, there was a likelihood of confusion under Article 8(1)(b) of the Trade Mark Directive. Use without due cause under Article 8(5) was also alleged. GIT prayed in aid two Community trade marks consisting of the word GALILEO as well as the two figurative marks portrayed here (left and below, right) which included the word GALILEO. These marks were, broadly speaking, registered for telecommunications and electronic communications goods and services. Later, the opposition was widened to include various national unregistered rights, but nothing appears to turn on them.

The Opposition Division upheld GIT's opposition, agreeing that there was a likelihood of confusion between the applied-for mark and two of GIT's marks, the word mark GALILEO and the "Powered by Galileo" figurative mark. No decision was taken on the issue of use without due cause. This decision was reversed by the Fourth Board of Appeal. The Board agreed that the respective goods and services ranged from the identical to the similar; however, the marks were neither identical nor similar "in so far as the ‘galileo’ component was not dominant within the overall impression of the sign of the mark applied for". Now it was GIT's turn to appeal.

The General Court dismissed the appeal, agreeing that the parties' respective marks were dissimilar. The Board was right to conclude that phonetically the letters "G, s and s" of GSS's mark were the main elements that the relevant public would take into account: only rarely would they even appreciate the presence of the word 'Gallileo’ when the expression ‘Galileo sistemas y servicios’ was articulated in full. Nor was there any visual similarity, thanks to the stylised nature of GSS's mark and the prominence of the letters "G, s and s". Conceptually,

" ... the word ‘galileo’ will only be perceived as an element of the expression ‘galileo sistemas y servicios’ which constitutes the meaning of the dominant element ‘gss’ and refers to systems and services from an entity whose name incorporates the name of the 16th century Italian astronomer and mathematician. On the other hand, the public will understand the words ‘galileo international’ as referring to an entity whose name incorporates the name of the Italian astronomer and which is concerned with a business covering several countries". [para.45]

Says the IPKat, this raises the question as to whether "conceptually" means (i) "what the consumer understands as the meaning of the word", (ii) "what the consumer understands as the meaning of the word in the context of the entire mark", (iii) "what the consumer understands as the meaning of the word in the context of the entire mark and in relation to the goods or services to which it is applied". The more general the test, the easier it is to find a likelihood of confusion -- and it is submitted that, since the correct approach is the third, much time and trouble can be saved by not seeking to persuade a court or examiner to contrary effect.

Merpel wonders what is so fascinating about Galileo that makes him so popular in branding circles. Galileo has been regularly in and out of the courts in recent times (see earlier Katposts here, here, here,here and here, for example), while Copernicus and Tycho Brahe remain relatively ignored.

Galileo in popular song lyrics here
Shameless allusion to a cultural icon here

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